The bar has been raised – How to duck under

Published on 06 Jun, 2012

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law, receiving Royal Assent on 15 April 2012. Most provisions in the Act come into effect on 15 April 2013. In overview, a patent will be harder to obtain and keep in force after 15 April 2013.

In summary:

Inventive step will be harder to establish as it will now only be necessary that a skilled person would understand the prior art and regard it as relevant (not ascertained). Furthermore, inventive step will be assessed against the common general knowledge in the art in general (as opposed to just in Australia).

With regards to requirements on a patent being “useful”, a patent specification will be required to disclose a “specific, substantial and credible use” for the claimed invention.

With regards to “sufficiency” requirements, a patent specification will be required to disclose the invention in a manner which is “clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”.

The claims of a patent will need to have “support” from the specification, as opposed to the previous requirement of “fair basis”.

The claims during examination will have to satisfy additional grounds for rejection, including prior use of an invention.

Amendments to a complete application will be more heavily restricted.

It is emphasised that the new law has yet to be interpreted by the courts. However, it is apparent that the inventive step threshold will be raised. As a basis of comparison for the new threshold, we believe that this is still no more than, and perhaps less than that required by the EPO and the USPTO. As such, applicants that have drafted their specification and claims for prosecution in overseas jurisdictions such as Europe or the US need not be overly concerned, for passing the European or US standard should also satisfy the new raised Australian standard.

How can I take advantage of the lower threshold of the present law?

Patent applications will NOT be subject to the raised patent standards in the new Bill if a request for examination is filed before 12 months from the date of assent, that date being 15 April 2013. Therefore leading up to 15 April 2013, applicants may wish to:

Arrange to request examination of pending applications before 15 April 2013

Bring forward Australian national phase entry to at least two weeks (or as soon as possible) before 15 April 2013

Bring forward Australian convention application filing to at least two weeks (or as soon as possible) before 15 April 2013

As mentioned above, the inventive step standard does not appear to be as stringent as that of Europe or the US. However, we would still recommend all applicants to bring forward requesting examination to reduce the risk the raised Australian standard adversely affecting the protection obtained in Australia.

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